The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is Dontrell Mcfarland, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2021. On July 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 2021, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 16, 2021.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 26, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundThe Complainant operates the OnlyFans subscription-based Internet audiovisual content service at “www.onlyfans.com” (the “Complainant’s website”), which it characterizes as a kind of social media platform. This was launched in November 2016 and has grown very quickly. The “About” page of the Complainant’s website states that more than 150 million registered users visit the site, generating in excess of USD 5 billion in annual revenues for 1.5 million largely uncensored content creators. These include celebrities, sex workers, musicians, physical fitness trainers, and others, according to media reports linked from the Complainant’s website and the Wikipedia article on “OnlyFans”.
The Complaint attaches Alexa Internet statistics from May 2021 showing that the Complainant’s website ranked 379 among the most visited websites on the World Wide Web at that time, and 213 among United States visitors. The Panel notes as well that the Complainant’s website repeatedly attracted media attention in the United States and internationally in the months preceding the Domain Name registration.
The Complainant points to the rapid growth of its business since 2016 and the international recognition of its ONLYFANS mark associated with the Complainant’s website and platform services to claim common law rights. The Complainant also has registered trademarks, however, including the following:
MARK
JURISDICTION
NUMBER
REGISTRATION DATE
ONLYFANS (word mark)
European Union
017912377
January 9, 2019
ONLYFANS (words and design)
European Union
017945559
January 9, 2019
ONLYFANS (word mark)
United Kingdom
UK00917912377
January 9, 2019
ONLYFANS
United Kingdom
UK00917946559
January 9, 2019
ONLYFANS.COM (standard characters)
United States
5769268
June 4, 2019
ONLYFANS (standard characters)
United States
5769267
June 4, 2019
ONLYFANS (words and design)
International Trademark
1509110
November 2, 2019
ONLYFANS (words and design)
United States
6253475
January 26, 2021
ONLYFANS (standard characters)
United States
6253455
January 26, 2021
The Registrar reports that the Domain Name was created on March 22, 2021 and is registered in the name of the Respondent with a postal address in the United States, showing no organization and using a Gmail email address.
The Complaint attaches screenshots showing that the Domain Name was used in May 2021 for “adult entertainment services (including content pirated from Complainant’s users) in direct competition with Complainant’s services, including ‘providing entertainment services … in the nature of a website featuring non-downloadable video, photographs, images, audio, and … in the field of adult entertainment.’” The home page of the website to which the Domain Name resolved (the “Respondent’s website”) was headed “XONLYFANSPORN”, with the word “porn” in a different color. Notably, an image of a lock was inserted inside the “o” of “only” just as it is in the Complainant’s trademarked logo. The home page featured thumbnail images from videos of sex acts, apparently captured in at least some cases from the Complainant’s website. The Complaint attaches another screenshot of a page from the Respondent’s website featuring a pay-per-view “10 minute sex video with Freddy” entirely copied from the Complainant’s website.
At the time of this Decision, the Domain Name does not resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that the Domain Name is confusingly similar to its ONLYFANS marks, which the Respondent has no permission to use. The Complainant argues that employing the Domain Name for a competing website, with an imitative name and logo and content pirated from the Complainant’s website, clearly does not represent a legitimate interest and reflects both prior knowledge of the Complainant’s marks and a bad faith intent to exploit them.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly SimilarThe first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds trademark registrations for ONLYFANS word marks and combined word and design marks with the prominent textual element ONLYFANS. This string is included in its entirety in the Domain Name, adding the letter “x” and the word “porn” (a common abbreviation for “pornography”; “x” also often refers to adult entertainment because of “x-ratings” in United States media). The addition of descriptive terms to the trademark portion of the string does not prevent a finding of confusing similarity. See id., section 1.8. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id., section 1.11.2.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s registered marks (it is not necessary to consider the Complainant’s common law trademark claims) for purposes of the Policy, paragraph 4(a)(i) and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has demonstrated its trademark rights and shown that the Respondent has competed illegitimately with the Complainant by copying content from the Complainant’s website and mimicking its logo on the Respondent’s website. This could not be considered a use of the Domain Name in connection with a “bona fide” commercial offering or a noncommercial fair use. See, e.g., Multi Media, LLC v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / John Holmes,WIPO Case No. D2020-1213. Accordingly, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, which has not been rebutted by the Respondent.
The Panel concludes that the Complainant has established the second element of the Complaint.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The record shows that the Complainant’s marks gained recognition (perhaps notoriety) very quickly since 2016, and the Respondent was clearly aware of them, as the Respondent mimicked the Complainant’s logo and copied content from the Complainant’s website on the Respondent’s own website displaying sexual content. This clearly reflects bad faith within the meaning of the Policy, an inference reinforced by the Respondent’s failure to reply to the Complaint or other correspondence from the Complainant or the Center.
The Panel concludes that the Complainant has established the third element of the Complaint, bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
W. Scott Blackmer
Sole Panelist
Date: September 9, 2021